The Japanese Trademark Protection System

The purpose of Japan’s Trademark Law is to protect trademarks, maintain the business reputation of trademark users, promote industrial development, and protect the interests of consumers.

A trademark should be recognizable through human perception, including text, graphics, symbols, three-dimensional shapes, colors, or combinations thereof, as well as sound or other signs specified by government regulations. These marks are used on goods produced, certified, or transferred by someone, or on services provided or certified for their business.

 

JPO Introduction to the Japan Patent Office

The Japan Patent Office (JPO) is a government agency under the Ministry of Economy, Trade and Industry of Japan, responsible for accepting, examining and registering applications for patents, utility models, designs and trademarks. JPO is also responsible for planning industrial property measures, such as reviewing patent laws and other industrial property systems, supporting small and medium-sized enterprises and universities in using industrial property, providing information on industrial property, and promoting international coordination and cooperation with developing countries

Website：www.jpo.go.jp

Telephone：03 – 3581 1101 – 2121/2123（General consultation on patents, utility models, designs, and trademarks ）

03 – 3581 1101 – 2105（Consultation fee issue）

Fax：03-3502-8916

address：〒100-8915 No. 4-3, Xiagaiguan 3-chome, Chiyoda ku, Tokyo

Email：PA1300@jpo.go.jp

 

Introduction to Japanese Trademark Registration

3.1 Conditions for Trademark Registration

　　According to Article 3 of the Japanese Trademark Law, any mark used on goods or services related to the applicant’s business can be registered unless the mark:

(1) Composed solely of a symbol representing a common name for goods or services in a conventional manner;

(2) It is a commonly used symbol for goods or services;

(3) For a product, it consists only of a symbol that represents its place of origin, place of sale, quality, raw materials, function, purpose, shape, method or feature (including production or use time, etc.), quantity, and price in a common way; Or for services, only consisting of signs indicating the location where the service is provided, the goods provided, the functions, uses, modes, methods or features (including the time, quantity or price provided);

(4) Composed solely of a symbol representing a common surname or given name in a conventional manner;

(5) Composed solely of a very simple and common symbol; perhaps

(6) Beyond the aforementioned items, it is a symbol that cannot be recognized by consumers as being related to someone’s business.

Despite the above provisions, if the use of the logo enables consumers to recognize that the product or service is related to someone’s business, the logos belonging to items (3) to (5) of the preceding paragraph can be registered.

In addition, Article 4 of the Trademark Law stipulates that the following signs cannot be registered as trademarks:

(1) Symbols that are identical or similar to the national flag, chrysanthemum wreath, medal, medal, or foreign national flag;

(2) Symbols that are identical or similar to the national emblem or any other government emblem (excluding the national flag) of a party to the Paris Convention for the Protection of Industrial Property, a member of the World Trade Organization (WTO), or a party to the Trademark Law Treaty designated by the Minister of Economy, Trade and Industry;

(3) A symbol that is identical or similar to the symbol designated by the Minister of Economy, Trade and Industry to represent the United Nations or any other international organization, but not if the symbol has been used for goods or services and is well-known to consumers, or cannot be mistaken for being related to an international organization;

(4) Symbols or names that are identical or similar to those in Article 1 of the Act on Restricting the Use of the Symbols and Names of the Red Cross and Other Organizations, or special symbols in Article 158, Paragraph 1 of the Act on Measures to Protect Japanese Citizens in Armed Attacks and Other Situations;

(5) An official mark or emblem designated by the Japanese national or local government, the Minister of Economy, Trade and Industry as a contracting party to the Paris Convention, a WTO member, or a contracting party to the Trademark Law Treaty, which is identical or similar to the official mark or emblem under control or guarantee, if it is used as a trademark for goods or services that are identical or similar to the control or guarantee;

(6) Symbols that are identical or similar to well-known logos representing national governments, local governments, their institutions, non-profit organizations operating in the public interest, or non-profit enterprises operating in the public interest, unless they are trademark registration applications filed by the aforementioned institutions;

(7) Signs that undermine public order and good customs;

(8) Containing portraits of others, or their names, well-known nicknames, stage names, or pen names, or their well-known abbreviations, except with the permission of relevant personnel;

(9) Symbols that meet JPO standards and are presented at exhibitions organized by national or local governments or non-governmental organizations, or that are identical or similar to awards presented by foreign governments or their authorized representatives at international exhibitions organized by foreign governments, except where the recipient of the award uses it as part of their own trademark;

(10) Same or similar to a well-known trademark of another consumer, and the mark will be used as a trademark for goods or services that are the same or similar to the former;

(11) The mark that is identical or similar to the trademark registration application submitted by others before the application date, and the mark will be used as a trademark for goods or services that are identical or similar to the former;

(12) The defensive trademark registered with others is the same or similar, and the logo will be used as a trademark for goods or services that are the same or similar to the former;

(13) Same or similar to the variety name registered under Article 18 (1) of the Plant Variety Protection and Seed Law, and the mark will be used as a trademark for the seeds and seedlings of the variety or similar goods or services;

(14) Signs that may cause confusion with goods or services related to others’ business;

(15) Signs that may mislead the quality of goods or services;

(16) Composed of a symbol designated by JPO to indicate the origin of Japanese wine or spirits, or a symbol designated by WTO members to indicate the origin of wine or spirits that are prohibited from being used on wines or spirits not originating from these regions, and which will be used as a trademark for wines or spirits not originating from Japan or these member regions;

(17) A symbol consisting solely of the characteristics assigned to a commodity, commodity packaging, or service as stipulated by a government decree;

(18) Similar or identical to a well-known trademark representing goods or services related to others’ business among consumers in Japan or abroad, and the trademark will be used for unfair purposes such as obtaining unfair profits, causing harm to others, or any other unfair purposes.

3.2 Defensive trademark

Japan allows the registration of defensive trademarks. When a registered trademark related to goods or services is well-known among consumers, if others use the registered trademark on goods or services other than those specified in the registered trademark, it may cause confusion between the goods or services of others and the business of the trademark owner. The trademark owner may register the same defensive trademark as the registered trademark on goods or services that have the possibility of confusion.

3.3 Acts considered as trademark infringement

According to Article 37 of the Japanese Trademark Law, the following actions are considered as infringement of trademark rights or exclusive rights without the permission of the trademark owner:

(1) Using a trademark similar to the registered trademark on goods or services designated by the registered trademark, or using a registered trademark or a trademark similar to the designated goods or services;

(2) Holding goods designated by the registered trademark for the purpose of transfer, delivery, or export, or goods similar to the designated goods or services, and affixing the registered trademark or similar trademark on the goods or their packaging;

(3) Owning or importing goods bearing registered trademarks or similar trademarks, which are used by the recipient of the services designated by the registered trademark or services similar to the designated services or goods, with the purpose of providing services through the use of these goods;

(4) Transfer, deliver, or possess or import goods with registered trademarks or similar trademarks for the purpose of transfer or delivery, which are used by the person receiving the services specified in the registered trademark or services similar to the specified services or goods, with the aim of providing services through the use of these goods;

(5) Having goods marked with a registered trademark or similar trademark for the purpose of using the registered trademark or similar trademark on goods or services designated by the registered trademark or similar goods or services;

(6) Transfer, deliver or hold goods bearing a registered trademark or similar trademark for the purpose of transfer or delivery, in order to use the registered trademark or similar trademark on the designated goods or services or similar goods or services;

(7) Manufacturing or importing goods marked with a registered trademark or similar trademark for the purpose of using or causing the use of the registered trademark or similar trademark on the goods or services designated by the registered trademark or similar goods or services; as well as

(8) As a business, manufacturing, transferring, delivering, or importing products specifically designed for manufacturing products bearing registered trademarks or similar trademarks.

3.4 Trademark protection period

The trademark right shall expire 10 years after its registration and establishment. The trademark owner can renew the registration by submitting an application for renewal, and the protection period can be extended by 10 years each time.

 

Japanese Trademark Registration Procedure

To register a trademark in Japan, the applicant can directly submit a trademark registration application to JPO or designate Japan through Madrid International Trademark Registration.

According to Article 4 of the Paris Convention for the Protection of Industrial Property, applicants who belong to the individuals listed in the left column of the table below may claim a priority of 6 months based on the trademark registration application filed in the country or region listed in the right column when submitting a trademark registration application in Japan.

Japanese nationals, or nationals of Paris Convention member states (including those deemed members under Article 3 of the Paris Convention), members of the World Trade Organization, or contracting parties to the Trademark Law Treaty

Nationals of members of the World Trade Organization (referring to nationals of members as defined in Article 1, Paragraph 1 of Annex 3C of the Marrakesh Agreement Establishing the World Trade Organization), or nationals of parties to the Trademark Law Treaty, members of the Paris Convention, members of the World Trade Organization, or parties to the Trademark Law Treaty

Japan implements the “one trademark, one application” policy, which means that the applicant must file a trademark registration application for each trademark and specify one or more goods or services related to the trademark. The designation must be based on the category of goods or services specified by the government decree, but it is not considered to specify the scope of similarity of goods or services.

4.1 Procedure for directly applying for a Japanese trademark with JPO

1. Application

In order to obtain trademark rights, the applicant must fill out the forms required by relevant regulations and submit them to JPO.

2. Publicly disclose unexamined applications

After receiving the application, JPO will publicly disclose the content of the unexamined application in the official gazette.

3. Formal review

The application documents submitted to JPO will be checked for compliance with necessary procedures and formal requirements. If necessary documents are missing or necessary sections are not filled in, the applicant will be required to make corrections.

4. Substantive examination

The application will be reviewed for substantive requirements, and the following trademarks will be deemed ineligible and rejected:

(1) Trademarks that cannot distinguish the applicant’s goods or services from those of other parties;

(2) A trademark that cannot be registered for the public interest or to protect private interests.

5. Notification of reasons for rejection

If any application does not meet the substantive requirements, JPO will send a notice to the applicant explaining the reasons for rejection.

6. Written opinions/revisions

The applicant may submit written comments on the reasons for rejection in the JPO notification, or submit revisions that invalidate the reasons for rejection.

7. Approval registration

If JPO ultimately determines that there are no grounds for rejection, trademark registration will be granted.

8. Reject

If written opinions and revisions cannot eliminate the reasons for rejection, and if the examiner determines that the trademark cannot be registered, a rejection decision will be made.

9. Request for Review

If the applicant is dissatisfied with the examiner’s rejection decision, they may request a re examination of the rejection decision.

10. Reexamination (for rejection decisions)

The review committee shall form a panel of 3-5 members. During the examination process, if it is determined that the grounds for rejection have been excluded, trademark registration shall be granted; If the reasons for rejection continue to exist, the decision not to register shall continue to be executed.

11. Registration (payment of registration fee)

After paying the registration fee, the trademark registration and trademark rights become effective.

12. Announcement

For registered and effective trademark rights, JPO will publish them in the Trademark Gazette.

13. Objections

Anyone can file an objection to the trademark registration decision with the Director General of JPO.

14. Request for invalidation/revocation of review

After trademark registration, anyone can file a request for review to declare the trademark invalid; If a trademark is not used for 3 years or more after registration, it may be revoked.

15. Reexamination (for invalid/revoked trademarks)

The review committee shall form a panel of 3-5 members.

If the panel considers that the registered trademark has no defects, the trademark registration shall be maintained; If the panel considers that the trademark has defects, it shall make a decision to revoke the trademark.

If the rights holder is unable to provide proof of trademark use, the panel will make a revocation decision and the trademark right will be revoked.

16. Intellectual Property High Court

When the applicant is dissatisfied with the review decision of JPO rejecting the application, and the interested parties are dissatisfied with the review decision of JPO being invalid or maintaining rights, they can appeal to the High Court of Intellectual Property.

For more information, please refer to the official website of JPO.

 

Introduction to Japanese Trademark Office Fees

Pay Service	Amount (Japanese Yen)
Trademark application fee
Trademark registration application	3400+specified category quantity x 8600
Application for defensive trademark registration or application for renewal of registration during the term of rights based on defensive trademark registration	6800+specified category quantity x 17200
Trademark registration and renewal fees
Trademark registration fee	Number of specified categories x 32900
Renewal registration application	Number of specified categories x 43600
Defensive trademark registration fee	Number of specified categories x 32900
Application for Renewal of Defensive Trademark Registration	Number of specified categories x 37500
Trademark adjudication fee
Request for Review	15000+specified category quantity x 40000
Trademark (Defense Trademark) Registration Objection	3000+specified category quantity x 8000

For more information, please refer to the official website of JPO.